David D. Chambliss et al.

Patent Trials and Appeals Board

Jan 17, 2020

14746905 - (D) (P.T.A.B. Jan. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/746,905 06/23/2015 David D. Chambliss ARC920150010US1 4364
84374 7590 01/17/2020
LIEBERMAN & BRANDSDORFER, LLC
802 STILL CREEK LANE
GAITHERSBURG, MD 20878
EXAMINER
WOOLWINE, SHANE D
ART UNIT PAPER NUMBER
2124
MAIL DATE DELIVERY MODE
01/17/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID D. CHAMBLISS and NIMROD MEGIDDO
Appeal 2018-008025
Application 14/746,905
Technology Center 2100

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
SCOTT RAEVSKY, Administrative Patent Judges.

RAEVSKY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–11, and 13–21. Appeal Br. 5.
Claims 4 and 12 have been canceled. Claims App’x. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “[A]pplicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 3.
Appeal 2018-008025
Application 14/746,905

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CLAIMED SUBJECT MATTER
The claims relate to a storage system organized into a hierarchy of
storage tiers. Spec., Abstract. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method comprising:
configuring a storage system into a hierarchy of storage
tiers, including a first performance storage tier and a second
performance storage tier;
determining a resource constraint limiting a number of
blocks and number of individual pages for selection and
placement into the first performance storage tier, wherein the
selection and placement are a combination of individual page
and block granularity, and a block comprises at least two pages;
estimating a benefit metric as a value of a given selection
of blocks and individual pages for placement in the first
performance storage tier, the benefit metric including a sum of
block scores of selected blocks, and individual page scores for
selected individual pages not contained in the selected blocks;
determining a preferred selection of a first combination
of blocks and individual pages according to the benefit metric;
and
placing the preferred selection of the first combination of
blocks and individual pages in the first storage tier with the
selection reflecting the preference as determined by the benefit
metric.
REJECTION
Claims 1–3, 5–11, and 13–21 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception. Final Act. 12.2

2 The Examiner withdrew a rejection of claims 1, 6, 9, 14, 17, and 20 under
§ 112(b). Advisory Act. 2
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Application 14/746,905

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We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
I. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described
in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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Application 14/746,905

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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“PTO”) recently published
revised guidance on the application of § 101. See USPTO’s 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019);
USPTO’s October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(collectively, the “Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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Application 14/746,905

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organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

II. Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 1 is directed to the abstract idea
of “calculating values and organizing information through mathematical
correlations.” Final Act. 12. Appellant disputes that the claims are directed
toward an abstract idea. Appeal Br. 11–18.
For reasons set forth in the next section, we agree with Appellant that
the claims are not directed toward an abstract idea. However, under Step
2A, Prong One of the Guidance, we determine that claim 1 recites at least a
mathematical concept because claim 1 broadly recites “estimating a benefit
metric as a value . . . the benefit metric including a sum of block scores.” As
drafted, this limitation, under the broadest reasonable interpretation, and
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according to the Guidance, recites a mathematical concept because a “sum
of block scores” is a mathematical calculation. See October 2019 Update:
Subject Matter Eligibility, 4 (Oct. 17, 2019) (“A claim that recites a
numerical formula or equation will be considered as falling within the
‘mathematical concepts’ grouping. In addition, there are instances where a
formula or equation is written in text format that should also be considered
as falling within this grouping. For example, the phrase ‘determining a ratio
of A to B’ is merely a textual replacement for the particular equation (ratio =
A/B).”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1165, 1167 (Fed.
Cir. 2018) (A claim reciting “performing a resampled statistical analysis”
was directed to a mathematical concept.). Accordingly, we conclude claim 1
recites an abstract idea.

IV. Step 2A, Prong Two (Integration into a Practical Application)
Under the Guidance, we determine if additional elements in the claims
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).3
Appellant contends the claims “are directed toward a specific
implementation of a solution to a problem in the computer hardware arts.”
Id. at 15–16. Specifically, Appellant contends,
Appellant’s improvement of storing data in tiered data storage
systems through determining a preferred selection of blocks and
pages through determination of a specific metric, for example,

3 We acknowledge that some of the considerations at Step 2A, Prong 2 may
be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of the Guidance). See Guidance, 84 Fed.
Reg. at 55 nn.25, 27–32.
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has a parallel function to that of the self-referential table
claimed by Enfish, as the improvement for storing and
accessing data further improves the efficiency of the overall
process of data management.
Id. at 15 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016). Appellant also contends,
such improvement for storing data based on the optimal
selection of pages through recognizing which pages are already
selected in blocks, and the optimal selection of blocks through
recognizing that some pages will be selected even when the
associated blocks are not selected, implements a real-world
solution to issues associated with storing data in tiered data
storage systems.
Id. at 14. We agree with Appellant.
Claim 1 recites additional limitations pertinent to solving a problem
with computer storage, including at least,
determining a preferred selection of a first combination
of blocks and individual pages according to the benefit metric;
and
placing the preferred selection of the first combination of
blocks and individual pages in the first storage tier with the
selection reflecting the preference as determined by the benefit
metric.
These additional limitations address a technical problem arising in the
context of a computer storage system, namely the problem that “higher
performance tier [storage] is expensive and as such space in the higher tier is
limited. . . . To address the limited capacity of the higher tier, a maximum
number of blocks and pages for selection and placement in the higher tier
must be determined.” Spec. ¶ 20. As claimed and explained in the
Specification, the solution to this problem is a technical one. For example,
the Specification explains,
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[o]nce a page is selected for the high-performance tier as either
a selected page or as a page contained in a selected block, there
would be no further benefit to selecting it both ways, e.g. page
and block. Accordingly, the optimal selection of pages must
recognize which pages are already selected in blocks, and the
optimal selection of blocks must recognize that some pages will
be selected even when the associated blocks are not selected.
Id. ¶ 21. Thus, similar to the claims in Enfish, “the focus of the claims is on
[a] specific asserted improvement in computer capabilities,” rather than on
an “‘abstract idea’ for which computers are invoked merely as a tool.”
Enfish, 822 F.3d at 1335–36.
We conclude these limitations integrate the recited judicial exception
of a mathematical concept into a practical application. Accordingly, under
the Guidance, the claims are eligible because they are not directed to the
recited judicial exception. Thus, we need not reach step 2B of the Alice
inquiry. We reverse the Examiner’s rejection under § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–11,
13–21
101 Eligibility 1–3, 5–11,
13–21
REVERSED